DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
The instant application is a 371 of PCT/FI2020/050749 filed on 11/13/2020, which claims foreign priority to Finland application no. FI20195993 filed on 11/20/2019. The certified copy of the foreign
priority application filed on 05/19/2022 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
The claim amendments and remarks filed on 09/10/2025 is acknowledged. Claims 1-2, 6-7, and 9 are amended.
Accordingly, claims 1-19 are pending and being examined on the merits herein.
Withdrawn Rejections
The 35 USC 112(b) rejection for claims 6-7 are withdrawn in view of claim 6 being amended to recite “a cellulose carbamate” and claim 7 being amended to remove the parenthetical “(merceration)”.
The 103 rejections over Saxell in view of Paunonen and Ennenbach for claims 1, 7-13, and 19, further in view of Miner for claims 2 and 14, further in view of Tikka for claims 3 and 15, further in view of Appel for claims 4-5 and 16-17, and further in view of Castro for claims 6 and 18 are withdrawn because Applicant’s arguments concerning the pulp mill disclosed in Paunonen was persuasive. New grounds of rejection are presented below.
The following grounds of rejections are new and not necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 7-14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025) in view of Paunonen et al. (Journal of Cleaner Production, June 2019 in PTO-892 dated 05/16/2025), Miner et al. (Energy, 2002 in PTO-892 dated 05/16/2025), and Ennenbach et al. (EP2617708A1 in IDS filed on 05/19/2022), and as evidenced by Balkissoon et al. (Biomass Conversion and Biorefinery, 2023 in PTO-892 dated 05/16/2025).
Saxell et al. discloses a method for manufacturing cellulose carbamate (CCA) (see Abstract).
Saxell et al. discloses that the method comprises of a) providing a never-dried pulp, b) adding urea and mixing said pulp with said urea, c) mechanically treating said mixture, d) drying the mixture, and e) heating the relatively dry mixture, thus providing a cellulose carbamate. (see paragraphs 0016-0020). Saxell et al. discloses that the never-dried pulp may be a chemical pulp or kraft pulp (see paragraph 0028). Saxell et al. discloses the pulp is preferably a dissolved type and derived from hardwood or softwood such as pine, spruce, cedar, etc. (see paragraph 0029). Saxell et al. also exemplifies that the pulp in their method was taken directly from a pulp mill (see Example 1, paragraph 0070), which suggests a chemical pulp mill based on Saxell disclosing that their pulp is of the dissolved or kraft pulp types. Saxell et al. discloses that an auxiliary agent such as an alkaline metal hydroxide such as sodium hydroxide, ammonia, or hydrogen peroxide may be added to the pulp to decrease the degree of polymerization (see paragraph 0035), which meets the limitation of activating the pulp via alkali hydrolysis or peroxide treatment as recited in instant claims 7 and 10. Saxell teaches that this auxiliary agent may be added before urea or at the same time with urea or after urea (see paragraph 0063). Saxell et al. discloses that ammonia gases were produced and removed from a reactor after the addition of hydrogen peroxide and urea to the pulp (see paragraph 0071-0072).
Saxell et al. discloses that the preferred pulp is of the dissolved type and has an alpha cellulose content above 93 wt % (see paragraph 29). Furthermore, as evidenced by Balkissoon et al., dissolved pulp is characterized by high cellulose content (>90%) usually termed alpha-cellulose, high brightness, and low macromolecular polydispersity (PDI) and a low hemicellulose content of <5% (see page 16611, left column second to last paragraph).
Even though Saxell teaches the CCA production process and suggests dissolving pulp and/or generating kraft pulp at a chemical pulp mill, Saxell does not disclose the CCA process is integrated into the pulp mill having a flue gas system such that carbon dioxide from the flue gas is reacted with the released ammonia to produce the urea used in the carbamate production.
Paunonen et al. discloses the environmental impact of cellulose carbamate (CCA) fiber production (see Abstract). Paunonen et al. discloses that the carbon footprint of a cellulose carbamate factory integrated with a pulp mill, which recycles water and chemicals in energy-intensive operations, is comparable to viscose production in Europe (see Abstract). Paunonen et al. discloses that in the integrated pulp mill CCA factory as seen in Figure 2, the produced ammonia was circulated back to the process as urea (see page 873, right column second to paragraph and Figure 2 on page 874). Paunonen discloses that the integration of a pulp mill into CCA production is the most promising way to decrease the carbon footprint as well as the reduction in the amount of process chemicals through efficient circulation (see third paragraph in section “Conclusions” right column on page 879).
Miner et al. discloses carbon dioxide emissions from lime kilns in kraft pulp mills (see Abstract). Miner et al. discloses that lime kilns are an integral part of the chemical recovery system and a very common unit operation in the pulp and paper industry. Miner et al. discloses these mills accounted for 83% of the pulp produced in the US (see page 730 last paragraph to page 731 first paragraph). Miner discloses that carbon dioxide emitted from lime kilns in kraft pulp mills come from two sources – fossils fuel burned in the kiln and the conversion of calcium carbonate to calcium oxide, which is needed to recover kraft pulping chemicals (see first two paragraphs under section “Summary” on page 736). Miner further illustrates in Fig. 1 on page 731 the kraft pulping and chemical recovery system. Here, Miner shows that sodium hydroxide is produced in the pulp mill at the end of the sodium and calcium loop (see box “Causticizers + White Liquor Clarifier” and also see second paragraph page 732).
Ennenbach et al. discloses a method of forming urea by integration of an ammonia production process with that of a urea production process (see Abstract). Ennenbach et al. discloses that a common feature for urea production is reacting ammonia and carbon dioxide under elevated pressure (see paragraph 0004). Ennenbach discloses that their method provides a solvent-based carbon dioxide capture system and method with reduced energy consumption demands and capital cost requirements (see paragraph 0008). Ennenbach et al. discloses that their method of forming urea comprises of obtaining ammonia and carbon dioxide from synthetic gas that is formed during steam reforming or gasification in connection with an ammonia production process. Ennenbach et al. further discloses that the ammonia gas stream and a flue gas stream containing the carbon dioxide are transported to a urea synthesis reactor to produce urea (see paragraph 0008).
It would have been prima facie obvious to combine Saxell et al. with Paunonen et al., Miner et al., and Ennenbach et al. before the effective filing date of the claimed invention by modifying the CCA production method disclosed in Saxell by integrating the pulp mill of Saxell to circulate back the produced ammonia back in as urea as taught by Paunonen and further modifying this pulp mill to include the lime kiln disclosed in Miner and the urea production method disclosed in Ennenbach to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to make these modifications because Paunonen et al. discloses the advantage of decreasing the overall carbon footprint and reducing the amount of process chemicals used via recycling, Miner discloses lime kilns being an integral part of a pulp mill to recover kraft pulping chemicals, and Ennenbach discloses the advantage of their method for reducing energy consumption demands and capital cost requirements. Furthermore, one ordinary skill in the art would have made these modifications with a reasonable expectation of success because Saxell discloses obtaining chemical pulp from a pulp mill, which suggests a chemical pulp mill, Paunonen provides guidance of integrating a pulp mill into a CCA process factory that recycles the produced ammonia back into the process as urea, Miner et al. discloses that lime kilns are widely used in kraft pulp mills, and Ennenbach et al. provides further guidance of a method to produce urea from an ammonia production process, which suggests the released ammonia during the CCA production process. Therefore, an ordinary skilled artisan could have predictably considered integrating the pulp mill of Saxell into the CCA process of Saxell as well as modifying this pulp mill to include the lime kiln of Miner and the urea production method in Ennenbach with a reasonable expectation of success.
In regards to instant claims 11-12, it would have also been prima facie obvious before the effective filing date of the claimed invention by using a dissolved pulp with alpha cellulose content above 93 wt % as disclosed in Saxell from the pulp mill as disclosed by the combined teachings of Saxell, Paunonen, Miner, and Ennenbach described above to arrive at the claimed invention. One of ordinary skill in the art would have made this modification with a reasonable expectation of success because Saxell et al. provides guidance that the preferred pulp in their invention is of the dissolved type with alpha cellulose content above 93 wt %. Furthermore, as evidenced by Balkissoon et al., dissolved pulp is characterized with a low hemicellulose content of <5%. Therefore, the dissolved pulp described above necessarily contains a low hemicellulose content of <5%.
In regards to instant claims 8 and 19, it would have also been prima facie obvious before the effective filing date of the claimed invention to have recycled the produced sodium hydroxide in the method as disclosed by the combined teachings of Saxell, Paunonen, Miner, and Ennenbach described above for use in activating the pulp to decrease the degree of polymerization as disclosed in Saxell and motivated by Paunonen to arrive at the claimed invention. One of ordinary skill in the art would have been would have been motivated to make these modifications because Paunonen discloses an advantage of reducing the amount of process chemicals used via recycling in the production of CCA. One of ordinary skill in the art would have made this modification with a reasonable expectation of success because Saxell provides guidance of using sodium hydroxide for the activation of pulp, and Miner provides guidance of generating sodium hydroxide in lime kiln kraft pulp mills. Therefore, an ordinary skilled artisan could have predictably considered using the sodium hydroxide produced in the pulp mill with a reasonable expectation of success.
Claim(s) 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025) in view of Paunonen et al. (Journal of Cleaner Production, June 2019 in PTO-892 dated 05/16/2025), Miner et al. (Energy, 2002 in PTO-892 dated 05/16/2025), and Ennenbach et al. (EP2617708A1 in IDS filed on 05/19/2022), and as evidenced by Balkissoon et al. (Biomass Conversion and Biorefinery, 2023 in PTO-892 dated 05/16/2025), as applied to claims 1 and 9 above, and further in view of Tikka et al. (US5589033A in PTO-892 dated 05/16/2025).
The combined teachings of Saxell et al., Paunonen et al, Miner and Ennenbach et al. are as described above. Furthermore, Saxell et al. teaches that ammonia may be added to the pulp as an alkalizing agent (see paragraph 0063).
The combined references, however, do not teach using the released ammonia to neutralize prehydrolysate in the pulp.
Tikka et al. discloses processes for preparing pulp from lignin-containing cellulosic material (see Abstract) and particularly, a process for the production of a pulp which has a high content of alpha cellulose and can be used e.g. as dissolving pulp (see column 1 lines 10-15). Tikka et al. discloses that the process includes prehydrolyzing the cellulosic material in a reactor, so as to produce prehydrolyzed cellulosic material and hydrolysate, neutralizing the hydrolysate and the prehydrolyzed cellulosic material in the reactor with alkaline neutralizing liquor so as to produce neutralized hydrolysate and neutralized prehydrolyzed cellulosic material (see column 2 lines 6-22). Tikka et al. discloses the prehydrolyzing step involves the use of mineral acids such as sulfuric or hydrochloric acid cooking liquor (see column 4 lines 32-36). Tikka et al. discloses that the purpose of the neutralization step is to neutralize the hydrolysate remaining in the digester and that there is hydrolysate in both the free liquid outside the chips and also trapped and immobilized inside the chips (see column 4 lines 46-54). Tikka et al. also discloses that in addition to the primary neutralization function, the neutralization step also serves as an alkaline hemicellulose dissolving step, which leads to a further purified pulp with higher pulp viscosity and higher alpha cellulose content (see column 5, lines 3-12).
It would have been prima facie obvious to combine Saxell et al., Paunonen et al., Miner, and Ennenbach et al. with Tikka et al. before the effective filing date of the claimed invention by using the released ammonia as the alkalizing agent in the method as disclosed by the combined teachings of Saxell, Paunonen, Miner, and Ennenbach described above to neutralize the prehydrolysate in dissolving pulp as disclosed by Tikka et al. to arrive to at the claimed invention. One of ordinary skill in the art would have been motivated to make this modification because Tikka et al. provides guidance that acidic hydrolysates can be present in dissolving pulp, and that neutralizing hydrolysates also serves as an alkaline hemicellulose dissolving step that can lead to a more purified pulp with higher viscosity and higher alpha cellulose content. Furthermore, Paunonen discloses an advantage of reducing the amount of process chemicals used via recycling in the production of CCA. Therefore, an ordinary skilled artisan would have been motivated to neutralize the hydrolysate by using the released ammonia in order to obtain these advantages. Furthermore, one of ordinary skill in the art would have made this modification with a reasonable expectation of success because Saxell et al. discloses using ammonia as an alkalizing agent for dissolved pulp. Therefore, an ordinary skilled artisan could have predictably considered alternative alkalizing agents such as ammonia for the neutralization of hydrolysate with a reasonable expectation of success.
Claim(s) 4-5 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025) in view of Paunonen et al. (Journal of Cleaner Production, June 2019 in PTO-892 dated 05/16/2025), Miner et al. (Energy, 2002 in PTO-892 dated 05/16/2025), and Ennenbach et al. (EP2617708A1 in IDS filed on 05/19/2022), and as evidenced by Balkissoon et al. (Biomass Conversion and Biorefinery, 2023 in PTO-892 dated 05/16/2025), as applied to claims 1 and 9 above, and further in view of Appel et al. (US20060004237A1 in PTO-892 dated 05/16/2025).
The combined teachings of Saxell et al., Paunonen et al, Miner, and Ennenbach et al. are as described above. Furthermore, Saxell et al. suggests that even though their CCA production is efficient and reduces washing and waste water treatment, unwanted by-products in waste water such as unreacted urea or ammonia is still generated (see paragraph 0056).
The combined references, however, do not teach wherein a nitrogen-containing wastewater is led to an evaporation plant or wastewater treatment plant to produce dry nitrogen fertilizers.
Appel et al. discloses the processing of waste and low-value products to produce useful materials in reliable purities and compositions, at acceptable cost, and with high energy efficiency (see Abstract). Appel et al. discloses the basic process of their invention is designed to handle potentially any waste or low-value product including paper-pulp effluent (wastewater) and byproducts of chemical wood-pulping (see paragraph 0048). Appel et al. discloses these useful materials include products such as fuel oil, fertilizer, and specialty organic chemicals (see paragraph 0028). Appel et al. discloses in their processing method that a produced water may be subject to concentration, such as by evaporation, producing a water condensate that may be recycled within the process of the present invention, and a concentrate that is dispatched to a concentrate storage. Appel et al. discloses that the concentrate, which largely comprises of a slurry of amino acids, glycerol and, potentially ammonium salts such as ammonium sulfate or phosphate, will typically have commercial value as, for example, fertilizers known as “fish solubles” that are sold in domestic garden stores (see paragraph 104). Appel et al. exemplifies a pilot plant utilizing their waste processing technique to produce a fertilizer (see Example 1, paragraphs 0143-151).
It would have been prima facie obvious to combine Saxell et al., Paunonen et al., Miner, and Ennenbach et al. with Appel et al. before the effective filing date of the claimed invention by further processing the nitrogen containing wastewater generated in the method as disclosed by the combined teachings of Saxell et al., Paunonen et al., Miner, and Ennenbach et al. described above into a dry fertilizer using the waste processing technique disclosed by Appel et al. to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to make this modification because Apple teaches that the processing of waste or low-value products can be made into recycle, useful materials. Furthermore, one of ordinary skill in the art would have made this modification with a reasonable expectation of success because Saxell et al. discloses their method generates wastewater containing urea, and Appel et al. provides guidance of converting wastewater generated from pulping processes into fertilizers. Therefore, an ordinary skilled artisan could have predictably tried the method if Appel for the generated wastewater with a reasonable expectation of success.
Claim(s) 6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025) in view of Paunonen et al. (Journal of Cleaner Production, June 2019 in PTO-892 dated 05/16/2025), Miner et al. (Energy, 2002 in PTO-892 dated 05/16/2025), and Ennenbach et al. (EP2617708A1 in IDS filed on 05/19/2022), and as evidenced by Balkissoon et al. (Biomass Conversion and Biorefinery, 2023 in PTO-892 dated 05/16/2025), as applied to claims 1 and 9 above, and further in view of Castro et al. (Industrial & Engineering Chemistry Research, 2002 in PTO-892 dated 05/16/2025).
The combined teachings of Saxell et al., Paunonen et al, Miner, and Ennenbach et al. are as described above.
The combined references, however, do not teach wherein the activation of the pulp is carried out at a fiberline of the chemical pulp mill.
Castro et al. discloses a detailed control study of the fiber line of a pulp mill process (see Abstract). Castro et al. discloses that pulp mills are highly integrated process from the feedstock to the final products and consists of two major processes: the fiber line and the chemical recovery loop (see page 1311 left column under section “Pulp Mill Process Description”). Castro et al. provides a schematic shown in Figure 1 of the fiber-line process in pulp mills (see page 1311). Castro et al. discloses that the main goal of the fiber line is to remove the majority of the lignin from the wood and to achieve a certain brightness coefficient by the end of bleaching. Castro et al. discloses these processes are achieved with chemicals such as sodium hydroxide (NaOH), sodium hydrosulfide (NaSH), oxygen, and chlorine dioxide. Furthermore, Castro et al. discloses that the pulp goes through additional washing to remove dissolved lignin and chemicals to be recycled (see page 1311 left column under section “Pulp Mill Process Description”).
Here, the removal of lignin from the wood pulp is being interpreted as activating the pulp to decrease degree of polymerization of the pulp because lignin is being removed from the wood pulp by chemical treatment with NaOH, NaSH, oxygen, and chlorine dioxide.
It would have been prima facie obvious to combine Saxell et al., Paunonen et al., Miner, and Ennenbach et al. with Castro et al. by modifying the pulp mill as disclosed by the combined teachings of Saxell et al., Paunonen et al., Miner, and Ennenbach et al. described above to activate the pulp along the fiber line process as disclosed in Castro et al. to arrive at the claimed invention. One of ordinary skill in the art would have made this modification with a reasonable expectation of success because Castro et al. provides guidance that the main goal of the fiber line is to remove the majority of the lignin from the wood and to achieve a certain brightness coefficient by the end of bleaching using chemicals such as sodium hydroxide (NaOH), sodium hydrosulfide (NaSH), oxygen, and chlorine dioxide. Therefore, an ordinary skilled artisan could have predictably considered carrying out the activation of the pulp at the fiber line of the chemical pulp mill with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments filed on 09/18/2025 have been fully considered in so far as they apply to
the rejections of the instant office action, but were not persuasive.
Applicant states that the CCA process in Paunonen uses ammonia to recover urea that is used in the spinning of the CCA process, and that the recited “circulated back to” in Paunonen is not a reference to circulating ammonia or urea to a pulp mill. Applicant states that Paunonen does not teach sending ammonia resulting from CCA production to a pulp mill.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, ammonia being circulated back into the pulp mill is not required. Instead, the instant claims require “the pulp mill having a flue gas system such that carbon dioxide from the flue gases is reacted with the released ammonia to produce the urea used in the carbamate production”. Therefore, in the new 35 USC 103 rejection over Saxell in view of Paunonen, Miner, and Ennenbach, Paunonen establishes obviousness to arrive at this limitation because the combined references provide guidance of reacting the ammonia released from the CCA process with the carbon dioxide flue gas produced in the pulp mill to form the urea for use in the CCA process as described above.
Applicant states that the teachings of Paunonen is incompatible with the process described in Saxell because Saxell teaches a process of using “never dried wood pulp”, whereas Paunonen teaches “chemical recycling of discard cotton textiles”. Applicant further states that these cotton textiles of Paunonen are dried and that Saxell teach a major drawback of using dried pulp due to the high urea dosage needed. Therefore, Applicant states that an ordinary skilled artisan would not consider the process in Paunonen from the teachings of Saxell.
Applicant’s arguments described above were not found persuasive because Paunonen teaches the integration of a pulp mill into a CCA process to reduce the total carbon footprint of the process as well as the recycling of chemicals. Therefore, an ordinary skilled artisan could have predictably considered this integration of a pulp mill for the CCA process in Saxell in order to reduce the environmental impact of the process and the recycling of chemicals. The difference between a dried pulp in Paunonen and never dried wood pulp in Saxell does not teach away or make incompatible the integration of a pulp mill into a CCA process.
Applicant states that Paunonen describes an integrated pulp mill and CCA process in which cooling water and heat energy from the pulp mill is transferred to the CCA process. Applicant states that there is no suggestion in Paunonen that any material is transferred from the CCA process to the pulp mill. Applicant states that Paunonen does not describe the pulp mill in detail and does not state whether the pulp is a chemical pulp mill or a chemical pulp mill, or whether the pulp mill processes wood chips or material from other plants such as cotton. Applicant states that Paunonen is a process of producing CCA from recycled cotton, and that the pulp mill in Paunonen process cellulose from cotton plants and not a wood-based pulp.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the combined teachings of Saxell, Paunonen, Miner, and Ennenbach establish obviousness to arrive at the claimed invention because the combined references provide guidance of a dissolving pulp derived from a wood-based material and further provides guidance that this dissolved pulp was taken from a pulp mill and into a CCA process as described above.
Applicant states that the syngas production plant in Ennenbach is not a pulp mill or a CCA production facility. Applicant states that the teachings of Ennenbach are not in the same technical field of the instant invention, which is for producing CCA. Applicant states that the syngas production plant of Ennenbach is not reasonably related to the problem of controlling the discharge of nitrogen compounds during CCA production. Therefore, Applicant states that Ennenbach is non analogues prior art and cannot be used to support an obviousness rejection. Applicant further states that the flue gases in Ennenbach can have a variety of different chemicals and does not teach that the carbon dioxide concentration in the flue gases from a pulp mill are adequate to produce sufficient urea for use in the CCA process described in Saxell.
In response to applicant's argument that Ennenbach is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the teachings of Ennenbach are within the same field of endeavor because even though the flue gases of Ennenbach could have other chemicals, the teachings of Ennenbach are focused on carbon dioxide and the reaction of ammonia and carbon dioxide to form urea. Here, Ennenbach teaches a common feature for urea production using the same ammonia and carbon dioxide under elevated pressure. Furthermore, the instant claims do not require any specific amount of carbon dioxide to be used or any amount of urea needed to be produced. Therefore, any conversion to urea would meet the limitations of the instant claims.
Applicant states that there is no rationale for rejecting dependent claim 7.
This argument above was not found persuasive because the initial rationale in the prior art rejection rationale includes the limitation of claim 7. Here, the combined references in the initial rationale are based on modifying the CCA production method disclosed in Saxell et al as described above. The modified CCA production method of Saxell includes the activation method with sodium hydroxide and/or peroxide treatment, which meets the limitation of activating the pulp via alkali hydrolysis or peroxide treatment as recited in instant claims 7 and 10.
Applicant states the dependent claims 8 and 19 require “chemicals produced or formed at the pulp mill”, and states that Saxell discloses that “ammonia is released during CCA production”. Therefore, Applicant states that these released ammonia during CCA production does not meet the requirement of using chemicals produced or formed at the pulp mill.
This argument above was not found persuasive because the new 35 USC 103 rejection over Saxell in view of Paunonen, Miner, and Ennenbach, Paunonen establish obviousness to arrive at this limitation, rendering Applicant’s argument moot.
Applicant states that dependent claim 11 requires the dissolved pulp to be less than five percent hemicellulose. Applicant states that this limitation is not mentioned in Saxell and therefore does not meet the requirement of this claim.
This argument above was not found persuasive because Saxell et al. provides guidance that the preferred pulp in their invention is of the dissolved type with alpha cellulose content above 93 wt %, and as evidenced by Balkissoon et al., dissolved pulp is characterized with a low hemicellulose content of <5%.
Applicant states that the rejections of instant claims 2 and 14 are traversed on the basis that there is not rationale for applying Miner to modify the pulp mill and CCA production facility mentioned in Paunonen. Applicant states that the modification in this rejection would require ammonia generated in the CCA process to be transferred to the pulp mill to generate urea and the urea back to the CCA process, and that this modification would result in an unnecessary circulation of ammonia and urea between pulp mill and CCA plant. Applicant further states that this circulation is unnecessary because Paunonen teaches that the CCA generates urea from ammonia.
Applicant’s arguments described above were not found persuasive because new 35 USC 103 rejection over Saxell in view of Paunonen, Miner, and Ennenbach, Paunonen uses a different rationale to generate the urea process. Here, the combined references provide guidance of including the lime kiln that emits carbon dioxide into the pulp mill of Saxell and further modifying the pulp mill with the urea production method disclosed in Ennenbach, which teaches reaction of carbon dioxide and ammonia from an ammonia production process. The modified pulp mill disclosed in this new rejection provides guidance of taking the carbon dioxide emitted from the pulp mill and the released ammonia from the CCA process to form urea. Therefore, there is no unnecessary circulation of ammonia and urea between the pulp mill and CCA process.
Applicant states that the rejections of instant claims 3 and 15 are traversed on the basis that Tikka teaches neutralizing prehydrolysate with sodium hydroxide and sodium sulfide that are strong bases, rather than ammonia which is a weak base. Applicant states that chemicals that are strong bases are need to neutralize the strong acidic “mineral acids such as sulfuric or hydrochloric acid, sulfur dioxide, and acid bisulfite cooking liquor”. Therefore, Applicant states that switching to ammonia would not have predictably resulted in neutralizing hydrolysate.
Applicant’s arguments described above were not found persuasive because Saxell provides guidance that alkalizing agents for activation of a pulp can include sodium hydroxide and/or ammonia, and Tikka provides guidance that sodium hydroxide is also known for neutralizing prehydrolysates. Therefore, in the absence of evidence that teaches away from using ammonia, an ordinary skilled artisan could have predictably considered alternative alkalizing agents such as ammonia for the neutralization of hydrolysate with a reasonable expectation of success. The fact that sodium hydroxide is a strong base and ammonia is a weak base does not necessarily discredit or teach away from the use of ammonia in neutralizing prehydrolysates especially when considering that ammonia is a known alternative alkalizing agent for sodium hydroxide as disclosed in Saxell.
Applicant states that the rejections of instant claims 4-6 and 16-18 are traversed on the basis that Appel does not describe processes for producing CCA or chemical pulp, and Castro does not teach or suggest generating CCA or integrating a pulp mill with CCA production.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the combined references are used to establish obviousness to arrive at the limitations of these claims as described above.
The following grounds of rejections are maintained from the previous Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,584,804 (‘804) in view of Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘804 recites “A method for controlling discharges of nitrogen compounds while producing cellulose carbamate, the method comprising: microcrystalline cellulose is produced from chemical pulp produced at a pulp mill as the chemical pulp is subjected to acid hydrolysis to form the microcrystalline cellulose and hydrolysate, and reacting the microcrystalline cellulose with urea to produce cellulose carbamate during which ammonia is released, wherein the microcrystalline cellulose production and the cellulose carbamate production are integrated to the pulp mill having a flue gas system that handles flue gases, wherein carbon dioxide from flue gases is reacted with the released ammonia to produce the urea, which is used in the carbamate production”. Claim 7 of ‘804 recites “wherein the chemical pulp is a bleach fibrous cellulosic wood pulp”. Claim 2 of ‘804 recites “The method according to claim 1, wherein the flue gas system is attached to a lime kiln, and the carbon dioxide is obtained from flue gases produced in the lime kiln.” Claim 3 of ‘804 recites “The method according to claim 1, wherein the released ammonia is used to neutralize hydrolysate and/or acidic wastewater from the production of the microcrystalline cellulose.”. Claims 13 and 14 of ‘804 recite “comprising feeding at least a portion of nitrogen containing wastewater from the production of the cellulose carbamate to an evaporation plant which concentrates the nitrogen containing wastewater to produce dry nitrogen fertilizers” and “conveying nitrogen-containing wastewater from the production of the cellulose carbamate to a wastewater treatment plant of the pulp mill to be used as nutrient”.
The difference between the claims of ‘804 and the claimed invention is that the claims of ‘804 does not recite a dissolving pulp or kraft pulp and an activating step to decrease degree of polymerization of the dissolving or kraft pulp.
Saxell et al. discloses a method for manufacturing cellulose carbamate (CCA) (see Abstract). Saxell et al. discloses that the method comprises of a) providing a never-dried pulp, b) adding urea and mixing said pulp with said urea, c) mechanically treating said mixture, d) drying the mixture, and e) heating the relatively dry mixture, thus providing a cellulose carbamate. (see paragraphs 0016-0020). Saxell et al. discloses that the never-dried pulp may be a chemical pulp or kraft pulp (see paragraph 0028). Saxell et al. discloses the pulp is preferably a dissolved type and derived from hardwood or softwood such as pine, spruce, cedar, etc. (see paragraph 0029). Saxell et al. also exemplifies that the pulp in their method was taken directly from a pulp mill (see Example 1, paragraph 0070). Saxell et al. discloses that an auxiliary agent such as an alkaline metal hydroxide, ammonia, or hydrogen peroxide may be added to the pulp to decrease the degree of polymerization (see paragraph 0035), and that this auxiliary agent may be added before urea or at the same time with urea or after urea (see paragraph 0063). Saxell et al. discloses that ammonia gases were produced and removed from a reactor after the addition of hydrogen peroxide and urea to the pulp (see paragraph 0071-0072). Saxell et al. discloses that their CCA production is efficient and reduces washing and waste water treatment (see paragraph 0056).
It would have been prima facie obvious to combine the claims of ‘804 and Saxell et al. by substituting the microcrystalline cellulose recited in the claims of ‘804 with a dissolved or kraft pulp as disclosed in Saxell et al. and further substituting the acid hydrolysis step with the addition of an auxiliary agent such as hydrogen peroxide to decrease the degree of polymerization to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to make this modification with a reasonable expectation of success because Saxell et al. discloses that their cellulose carbamate production method is efficient and reduces washing and waste water treatment.
Response to Arguments
Applicant states that the nonstatutory double patenting rejection is improper because the instant application and Saxell do not share inventors, applicants or assignees.
This argument was not found persuasive because the double patenting exists between US’804 and the instant application. Saxell was used as a secondary reference to establish obviousness in the nonstatutory double patenting rejection and not as the reference application for double patenting. Furthermore, US’804 shares the same assignee and inventors. Therefore, the double patenting rejection is proper and maintained.
Conclusion
No claim is found allowable.
This action is made non-final in view of the newly added rejections that were not necessitated by Applicant’s amendments.
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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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